Trademark Law Basics

I. Intellectual Property Law Branches and Their Historical Origins

A. Differences branches of Intellectual Property Law

1.
Patent law - protects inventions that are novel, useful, and nonobvious
by granting its owner the right to exclude others from making, using, or selling
the claimed invention. 2. Copyright law - protects authors of creative
works such as books, movies, art from any unauthorized copying, reproduction or
distribution of their work. Protects only the expression and not the idea of the
work. 3. Trademark law - protects the name or mark associated with
the product to which they are attached. A trademark is any word, name, symbol,
color or sound that is adopted and used by a company to identify its goods and
distinguish them from those manufactured or sold by others. Service mark is the
same as a trademark but identifies a service and not a product.

1. Trademark law begins in 13th century
England to protect consumers against counterfeit goods. 2. In 1870's United
States and England set up Trademark Departments granting trademark registrations.

C.
Consumer Confusion is the test of trademark infringement.

1.
Consumer confusion requires similar trademark and similar product.

a. Delta Airlines, Delta Faucet, Delta Dental can all coexist in the marketplace
because different products prevent consumer confusion. b. Concerned only with
similar products to your invention.

II.
Choosing a Protectable Brand Name for Your Invention

A. The
Spectrum of Trademark Distinctiveness

1. Fanciful trademarks - are "coined" terms that had no meaning before
being trademarks. Exs: KODAK, STARBUCKS, VERIZON, POLAROID, EXXON Arbitrary
trademarks - are common words used in a unique way so that the word has no relationship
to the product. Exs: APPLE and SUN for computers, AMAZON and YAHOO! For Internet
sites, GREY GOOSE for vodka. 2. Suggestive trademarks - indirectly
allude to a quality of the product. Exs: PLAYBOY for a men's magazine, 7-11 for
a store that was open from 7 a.m. to 11 p.m., JAGUAR and MUSTANG for fast cars.
3. Descriptive trademarks - describe the goods or service they market.
Exs: REGISTERINGATRADEMARK.COM for an Internet site that registers trademarks,
COMPUTERLAND for a computer store, VISION CENTER for an optics store.

a. Determining whether a trademark is suggestive or descriptive is hard to
articulate (9th Circuit). Look to whether competitors need to use the term and
whether the primary meaning is descriptive.

4. Generic trademarks
- where the term describes a whole class of products. PERSONAL COMPUTER for
a personal computer, MILK for milk.

1. Registration grants exclusive rights to use that trademark for that product
in America. Because trademark law grants such strong rights, there is a high standard
to achieve registration. 2. Only fanciful, arbitrary, and suggestive trademarks
are considered inherently distinctive and initially entitled to registration.
3. Descriptive trademarks can achieve registration if they achieve "secondary
meaning." "Secondary meaning" occurs when customers come to recognize the particular
term as having a second meaning, signifying a particular brand. Requires extensive
advertising over long period of time. The descriptive trademark FROSTED MINI WHEATS
was able to be registered after years of extensive advertising by Kellogg.
4. Tension between marketing ease of descriptive trademark and strong legal protection
of a distinctive trademark. Examples of descriptive vs. suggestive trademarks:

III.
Striking a balance - a suggestive trademark can achieve registration and is easier
to market than a fanciful or arbitrary trademark.

A. Brainstorming
to create a suggestive brand name.

1. Choose a related term
from another area such as a different culture, mythology, field of study,
etc.

Examples from Greek Mythology for suggestive trademarks:

MERCURY
SOFTWARE - for software that speeds communication. PHOENIX VENTURES - for
an investing firm that focuses upon investing in failing companies and reviving
these companies. POISDEON ADVENTURE - for a water slide and ride theme park.
ARETE COACHING - for life coaches ("arete" is the Greek word for "overall excellence").
DIONYSIUS - for a dance club with a wine bar.

2. Use a term that connotes
many of the ideas or principles of your company. Example: LEAPFROG for the
educational toy manufacturer. LEAPFROG simultaneously conveys two related messages:
1) that LEAPFROG, which is a famous children's game, is entertaining and geared
for children; and 2) that utilizing LEAPFROG products will allow your child to
"leap ahead" in learning.

3. Truncate or use an acronym rather than a
descriptive term. Truncate Exs: ALLEVE for alleviate. Acronym Exs: IBM, UPS

4.
Utilize a foreign term that expresses the connotations you want to convey.
BON VOYAGE for a travel agency. BON MOT (meaning the perfect word) for an editor.
Note that foreign terms are literally translated so this term must be suggestive
and not descriptive of your product.

5. Invent a brand name. Utilize
the same genius that created your invention for creating your new brand name.
Throw a naming party!

IV. Clearing Your
Trademark

A. Are you first?

1. Trademark
rights are granted to the first to use the trademark and/or first to file a trademark
application. 2. Need to search relevant databases to see if similar trademarks
marketing a similar product or service exist. Databases include: Federal
trademark database, all 50 states' trademark databases, business directories,
Google, domain name registries, etc. 3. You cannot "clear" a mark because
you need a trademark lawyer to do this. But you can eliminate some choices.

1. Much harder than registering Internet domain name or corporate name.

a. Conflicting trademark does not need to be identical, just similar.
b. Examples of conflicts for trademarks that were not similar include CYCLONE
and TORNADO for chain-link fencing, BECK'S BEER and EX BIER for beer, PLAY-DOH
and FUNDOUGH for clay.

V.
Trademark Costs, Application Timeline and Proper Usage

A. Trademark
protection is much cheaper than patent protection.

1. Rough
estimate of slightly under $1,000 in legal fees for trademark search and application
filing plus government filing fee of $335. 2. Likelihood of achieving
registration and not incurring more legal fees as application matures to registration
higher when you order a search.

B. Trademark Application Timeline

1. 4-6 months before Trademark Office responds. 2. Generally over one year
before registration is granted.

a. Important date is date
of filing and dates of use so begin trademark application process ASAP.

a.
Never use a trademark as a verb: not XEROXING a copy but photocopying on a XEROX
copier, not ROLLERBLADING, but in-line skating with ROLLERBLADE in-line skates
b. Never use a trademark as a noun: Ride the ESCALATOR, take an ASPIRIN

a. TM or SM can be used at any time, merely your determination
that this is a protectable trademark or service mark. Potential risk of trademark
infringement when you use your trademark and include a TM or SM symbol, so "clear"
the mark before using these symbols. b. ® can only be used once the mark
has achieved a United States trademark registration.